Ex Parte Garbow

Patent Trial and Appeal Board

Nov 30, 2012

10777260 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ZACHARY ADAM GARBOW
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Appeal 2010-005174
Application 10/777,260
Technology Center 2400
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Before ALLEN R. MacDONALD, TREVOR M. JEFFERSON and
LARRY J. HUME, Administrative Patent Judges.

MacDONALD, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Introduction
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 1-6 and 21-23. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows (emphases added):
1. A method comprising:
determining whether data meets a criteria;
if the data does not meet the criteria, sending the data to a
computer display of a computer, wherein the computer comprises a
base portion and a lid portion, wherein the base portion and the lid
portion of the computer are attached via a first hinge, wherein the
base portion and the lid portion of the computer rotate via the first
hinge between a first closed position and a first open position, and
wherein the lid portion comprises the computer display; and
if the data meets the criteria, sending the data to a personal
digital assistant that is detachably and rotatably connected to the lid
portion of the computer via a second hinge, wherein the personal
digital assistant rotates via the second hinge between a second
closed position atop the lid portion of the computer and a second
open position side-by-side with the lid portion of the computer,
wherein in the second open position a screen of the personal digital
assistant is viewable simultaneously with the computer display when
the base portion and the lid portion of the computer are in the first
open position, and wherein in the second closed position the screen
of the personal digital assistant is not viewable simultaneously with
the computer display.

Rejections
The Examiner rejected claims 1, 4, 6, and 23 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Singleton (US 2004/0019724
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Al), Ramakesavan (US 2003/0065734 Al), and Duquette (US 6,667,877
B2).1
The Examiner rejected claims 2 and 5 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Singleton, Ramakesavan,
Duquette, and Chen (US 2004/0148419 Al). 2
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Singleton, Ramakesavan, Duquette,
and Hawkins (US 6,957,397 B1).
The Examiner rejected claims 21 and 22 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Singleton, Ramakesavan,
Duquette, and Huber (US 7,197,584 B2).
Appellant’s Contentions
1. Appellant contends repeatedly that the Examiner erred in
rejecting claim 1 under 35 U.S.C. § 103(a) because the references teach
away from:
“sending the data to a personal digital assistant that is
detachably and rotatably connected to the lid portion of the
computer via a second hinge, wherein the personal digital
assistant rotates via the second hinge between a second closed
position atop the lid portion of the computer and a second open
position side-by-side with the lid portion of the computer,
wherein in the second open position a screen of the personal
digital assistant is viewable simultaneously with the computer

1 Separate patentability is not argued for claims 4, 6, and 23. Except for our
ultimate decision, these claims are not discussed further herein.
2 Separate patentability is not argued for claims 2, 5, 3, 21, and 22. Rather,
Appellant argues these claims are patentable based on their dependency
from claim 1. All these remaining rejections turn on our decision as to the
underlying § 103(a) rejection of claim 1, and except for our ultimate
decision, these claims are not discussed further herein.
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display when the base portion and the lid portion of the
computer are in the first open position, and wherein in the
second closed position the screen of the personal digital
assistant is not viewable simultaneously with the computer
display” as recited in Claim 1.
(App. Br. 17-18).
2. Appellant further contends that the Examiner erred in rejecting
claim 1 under 35 U.S.C. § 103(a) because combining the computer and
personal digital assistant (PDA) structures of the references would render the
structure of Ramakesavan inoperative for its intended purpose. (App. Br.
18).
Issue
Has the Examiner erred in finding that Singleton, Ramakesavan, and
Duquette teach the invention recited in independent claim 1?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred.
Appellant does not dispute the examiners conclusion that the
combination of Singleton, Ramakesavan, and Duquette render obvious the
method steps comprising “determining whether data meets a criteria;” “if the
data does not meet the criteria, sending the data to a computer display of a
computer,” and “if the data meets the criteria, sending the data to a personal
digital assistant.” Rather, Appellant argues that the combination of these
references do not render obvious the structure of the PDA and computer
recited in claim 1. (App. Br. 17-22).
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Initially we note the independent claim 1 structural phrase as to the
computer:
wherein the computer comprises a base portion and a lid
portion, wherein the base portion and the lid portion of the
computer are attached via a first hinge, wherein the base portion
and the lid portion of the computer rotate via the first hinge
between a first closed position and a first open position, and
wherein the lid portion comprises the computer display
(Claim 1) and, structural phrase as to the PDA:
that is detachably and rotatably connected to the lid portion of
the computer via a second hinge, wherein the personal digital
assistant rotates via the second hinge between a second closed
position atop the lid portion of the computer and a second open
position side-by-side with the lid portion of the computer,
wherein in the second open position a screen of the personal
digital assistant is viewable simultaneously with the computer
display when the base portion and the lid portion of the
computer are in the first open position, and wherein in the
second closed position the screen of the personal digital
assistant is not viewable simultaneously with the computer
display
(Claim 1) are both statements of intended use. A statement of intended use
cannot distinguish over a prior art apparatus that discloses all the recited
limitations and is capable of performing the recited function. See In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). We note that “[a]n
intended use or purpose usually will not limit the scope of the claim because
such statements usually do no more than define a context in which the
invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-
Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Although “[s]uch
statements often […] appear in the claim's preamble,” In re Stencel, 828
F.2d 751, 754 (Fed. Cir. 1987), a statement of intended use or purpose can
appear elsewhere in a claim. Id.
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Appellant’s claim 1 method recites three steps “determining,”
“sending,” and “sending.” Appellant’s claim 1 does not describe steps
performed by the computer and PDA themselves but instead recites
“sending” data to these specific structures. No function of the computer,
PDA, or any portion thereof is recited. In light of this, the recited structures
of the computer and PDA are statements of intended use.
Based upon our review of the record, we find Appellant has failed to
present substantive arguments supported with specific factual evidence of
sufficient character and weight to persuade us of error regarding the
Examiner’s obviousness conclusion as to the method of claim 1. Essentially,
Appellant has underlined limitations in the recited claim without providing
any explanation as to why the portions referenced cited by the Examiner and
the Examiner’s conclusion is in error.
Accordingly, Appellant has not persuaded us that the Examiner erred
in concluding that the combination of Singleton, Ramakesavan, and
Duquette, render obvious the invention as recited in independent claim 1.
Therefore, the Examiner did not err in rejecting claim 1 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Singleton,
Ramakesavan, and Duquette.
Separately, even assuming we were to give weight to the intended use
of claim 1, we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellant’s Appeal Brief. Even using this assumption, we concur with the
conclusions reached by the Examiner.
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CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-6 and 21-23 as
being unpatentable under 35 U.S.C. § 103(a).
(2) Claims 1-6 and 21-23 are not patentable.

DECISION
The Examiner’s rejections of claims 1-6 and 21-23 are affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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